Flanax Belmora LLC
Flanax Belmora LLC

There are two Flanax’s.  Belmora LLC (“Belmora”) distributes Flanax, a brand of pain relief medicine, in the United States while Bayer has distributed a brand of pain medicine, Flanax, in Mexico for decades.  Bayer sought to cancel Belmora’s registered trademark for Flanax in the Trademark Trial and Appeal Board (“TTAB”).  Bayer won in that venue.

Then, the parties sought review of that decision and brought additional causes of action in the Eastern District of Virginia.  Belmora filed a motion to dismiss Bayer’s counterclaims, which the District Court had granted, and a motion to reverse the TTAB opinion.

In its counterclaim, Bayer alleged that Belmora’s early packaging was “virtually identical” to Bayer’s, and that Belmora’s marketing messages often suggested a historical connection between Belmora’s Flanax and Latino customers.  For instance, Bayer alleged that Belmora tried to link itself with Bayer’s Flanax by saying that Belmora’s was a brand that Latinos had turned to “for generations.” 
Continue Reading The Battle of the Two Flanax’s and the Power of the Mexico-United States Border

Launching an advertisement, production, or publication without obtaining the necessary third-party intellectual property (IP) rights can have costly consequences. A jury recently awarded the Beastie Boys and related plaintiffs $1.7 million in a lawsuit against Monster Energy for using Beastie Boys music and references to the Beastie Boys in a promotional video on Monster’s website without proper permission after finding Monster Energy’s actions to be willful copyright infringement and a false endorsement under the Lanham Act.  The court recently denied Monster Energy’s post-trial motions for judgment as a matter of law, a new trial, and a reduction in damages. The Beastie Boys are now seeking an additional $2.4 million in attorneys’ fees and costs. Capitol Records, LLC, and Universal-Polygram International Publishing, Inc., have now sued Monster Energy in a related case.
Continue Reading Beastie Boys Win $1.7 Million Verdict, Underscoring the Importance of Clearing IP Rights

As we previously reported here on March 25, 2014 the United States Supreme Court issued its much-anticipated decision in Lexmark Int’l Inc. v. Static Control Components, Inc The decision resolved a three-way Circuit split, rejected the test in the Seventh, Ninth and Tenth Circuits that the plaintiff and defendant had to be direct competitors, and articulated a new test for standing to bring a Lanham Act false advertising claim – a plaintiff must be in the “zone of interest” and must have injuries proximately caused by the defendant’s false advertising.

The other recent landmark Supreme Court decision in this area is of course POM Wonderful LLC v. Coca-Cola Co., which we also previously reported on here.  That case held that competitors could bring suits under the Lanham Act challenging food and beverage labels that were regulated by the Federal, Food, Drug, and Cosmetic Act (“FDCA”) and complied with those regulations—in other words, the FDCA does not preclude claims under the Lanham Act, at least in the area of food and beverage labeling.

Lower courts are already recognizing that Lexmark and POM Wonderful have broadened the scope of Lanham Act litigation between competitors, and in fact are applying Lexmark and POM Wonderful beyond the realm of false advertising. 
Continue Reading A Whole New Lanham Act? A Look at Lexmark and POM Wonderful in Action

The United States Supreme Court paved the way today for competitors to challenge FDA-regulated food and beverage labels under the Lanham Act.  The Court’s opinion in POM Wonderful LLC v. The Coca-Cola Co. is the latest chapter in a long-running feud between POM Wonderful and Coca-Cola, which arose in 2008 when POM accused Coke of mislabeling one of its fruit juice blend products by prominently displaying the words “pomegranate blueberry” despite the product consisting mostly of less expensive apple and grape juices.  To date, Coke had successfully persuaded a California district court and the Ninth Circuit that POM’s Lanham Act claims were precluded by the Federal Food, Drug, and Cosmetic Act and attendant FDA regulations specifically addressing the labeling of fruit juice blends. 
Continue Reading Supreme Court Opens Door to Food and Beverage Label Challenges Under Lanham Act

In ruling on a motion to dismiss counterclaims brought under Section 43(a) of the Lanham Act, the District Court of Oregon ruled that statements made by a corporate agent to a journalist may be actionable.

In Skedko, Inc. v. ARC Products, LLC, the defendant counterclaimed for false advertising.  Both plaintiff and defendant manufacture and sell evacuation devices.  Plaintiff’s device is the Sked® Rescue System, “(‘Sked’), an evacuation sled system designed to quickly evacuate wounded people from confined spaces, from high angles, in technical rescues, and in traditional land-based rescues.”  Defendant’s device is the Vertical Lift Rescue Sled, “which is an evacuation device that provides quick transport of a nonambulatory individual in a difficult rescue situation or a confined space.”

Among the advertising that defendant challenged through its counterclaims was a statement by plaintiff’s executive and agent that appeared in the article “Cleared for Takeoff” for the publication Military Medical & Veterans Affairs Forum.  Skedko’s agent told the author of “Cleared for Takeoff” that “an individual person can have an injured person ready for transport in a Sked sled in a mere 20 seconds and that [the agent] could perform this ‘routinely.’”  Defendant alleged that this statement was false because “in reality it takes significantly longer for an injured person to be loaded into and ready for transport into a Sked sled.”


Continue Reading Not All Press Is Good Press

Katherine Heigl, a star of the television series Grey’s Anatomy and films like Knocked Up and 27 Dresses, recently made non-TMZ headlines when she sued drugstore chain Duane Reade for $6 million dollars for posting a photo of her to its Twitter and Facebook accounts, accompanied the text “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC’s favorite drugstore.” Here’s a copy of the Twitter post that has caused such a stir:

heigel

What’s the problem, you ask? In a time when celebrities regularly post photos of their daily lives to public Twitter accounts and selfies dominate the social media space, what’s the big deal with a company posting a paparazzi photo of a celebrity that no doubt was already available in the public domain? The problem, according to Ms. Heigl, is that Duane Reade used the photograph for its own commercial advertising without her permission, exploiting Ms. Heigl’s celebrity status for its own commercial gain.  This conduct, according to Ms. Heigl’s complaint, is a violation of the Lanham Act, her right of privacy and publicity under New York Civil Rights Law, and New York unfair competition.


Continue Reading What’s in a Name? Dollars – At Least When You’re A Celebrity

We all know that constant fighting is exhausting and can cause headaches or even stomachaches.  A challenger recently brought a fight over stomachache claims brought by headache medicine makers but NAD said enough is enough in these ongoing aspirin wars.  The recent McNeil Tylenol case sheds light on NAD’s views about the scope of its

The Supreme Court of the United States of AmericaYesterday the Supreme Court issued its decision in Lexmark International, Inc. v. Static Control Components, Inc., a case that presented it with a three-way Circuit split on the issue of who has standing to bring a Lanham Act false advertising claim.  Before this decision, the law in the Third, Fifth, Eighth and Eleventh Circuits was that the plaintiff had to satisfy the five-factor test articulated in Associated General Contractors, an antitrust case.  The Seventh, Ninth and Tenth Circuits used a bright-line test, allowing plaintiffs to bring false advertising suits only against actual competitors.  The Second and Sixth Circuits adopted a “reasonable interest” test (an amici favorite) that looked to whether the plaintiff had a reasonable interest to protect and a reasonable basis for believing that interest was being impaired.

Justice Scalia wrote the opinion for a unanimous Court.  In typical Scalia style, he applied “traditional principles of statutory interpretation” to discern not “whether Congress should have authorized [the plaintiff’s] suit, but whether Congress in fact did so.”  And in another familiar move, Justice Scalia rejected all three tests applied by the Circuits in favor of his own.  In a Goldilocks moment, he found the antitrust standing test a “commendable effort” (high praise!) but “slightly off the mark,” the direct-competitor test a “distort[ion] of the statutory language,” and the reasonable interest test vague and “lend[ing] itself to widely divergent application.”  What was just right?  A test that looks to: (1) whether the plaintiff’s interests fall within the “zone of interests” protected by the Statute; and (2) whether the plaintiff’s injuries were proximately caused by the alleged violations of the Statute.

What is the significance of the opinion? 
Continue Reading Supreme Court Issues Much Awaited Decision in Lexmark Case